In a trial for invalidation of a patent or a trial for revocation of a trial for invalidation of a patent, whether a trial decision not to accept a request for correction or a trial for revocation of a trial for revocation of a trial for invalidation of a patent or for another reason for which the patentee was given an opportunity to submit a written opinion through a written notice of correction

Upon receipt of a request for a trial for invalidation of a patent, the patentee may request correction of the specification or drawing of the patented invention within a specified period from the date of receipt of a duplicate of the request for a trial or from the date of receipt of notification of ex officio reasons for the trial or within the period allowed by the presiding trial examiner due to submission of evidentiary documents by the petitioner (see Article 133-2(1) of the former Patent Act (amended by Act No. 9381, Jan. 30, 2009; hereinafter the same). Such correction may be within the scope of the contents or drawing(s) of the patented invention. If the request for correction deviates from the scope of the contents or drawing(s) of the patented invention, the trial examiner shall notify the patentee of the reasons and give him/her an opportunity to submit a written opinion (see Articles 133-2(4) and 136(2) and (5) of the former Patent Act). Accordingly, the foregoing provision which allows the patentee to submit a written request for correction to the public interest request to maintain the credibility of the trial system.

Articles 133-2(1) and (4), and 136(2) and (5) of the former Patent Act (Amended by Act No. 9381, Jan. 30, 2009);

[Plaintiff-Appellant] Plaintiff 2003Hu83, Nov. 13, 2003 (Gong2003Ha, 2371) Supreme Court Decision 2006Hu2660, Apr. 27, 2007 (Gong2007Sang, 808)

United Nations Framework Convention on Tariffs and Trade (Patent Attorney Nos. 1 and 1 other, Counsel for the defendant-appellant)

Columbte Co., Ltd. (Patent Firm Hanmun et al., Counsel for the defendant-appellant)

Patent Court Decision 2010Heo6423 Decided April 22, 2011

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined.

1. Regarding ground of appeal No. 1

Upon receipt of a request for a trial for invalidation of a patent, the patentee may request correction of the specification or drawing of the patented invention within a specified period from the date of receipt of a duplicate of the request for a trial or ex officio examination or from the date of receipt of notification of reasons for the request for a trial by the petitioner’s submission of evidentiary documents (see Article 133-2(1) of the former Patent Act (amended by Act No. 9381, Jan. 30, 200; hereinafter the same). Such correction may be made within the scope of the matters described in the specification or drawing of the patented invention. If the request for correction deviates from the scope of the matters described in the specification or drawing of the patented invention, the trial examiner shall give the patentee an opportunity to submit a written opinion (see Articles 133-2(4) and 136(2) and (5) of the former Patent Act). The foregoing provision which allows the patentee to submit a separate written opinion on the request for correction and to maintain the credibility of the trial system, and it is due to the so-called mandatory provision to rejection of a request for correction revocation of a trial decision after a trial decision.

According to the reasoning of the judgment below, the court below determined to the effect that the correction of the patent invention of this case (patent No. 1 omitted) at the time of original adjudication to the effect that the correction of the patent invention of this case (patent No. 1 invention of this case (hereinafter "patent No. 1 invention of this case", and the remaining claims are identical in the same manner) "compactactactactact with the first claim No. 1 of this case after the correction request of this case (hereinafter "the correction invention of this case", and the remaining claims are identical in the same manner) constitutes a reduction of the patent claim, but the correction of the patent invention of this case No. 2 of this case (patent No. 1 of this case is subordinate to the correction invention of this case, which is "compact with the first claim No. 3 of this case," which is "compact with the first claim No. 1 of this case," which is not possible to submit to the plaintiff the new claim No. 2 of this case's patented invention of this case as stated in the specification or drawing No. 2 of this case. 2 of this case.1 of this case.

However, such determination by the court below is difficult to accept for the following reasons. First, according to the records, the judge’s correction of the instant request for correction as “heat contact with the first claim on May 19, 2010” was not stated in the specification of the instant patent invention, and thus, it is not legitimate to present opinions. In light of the above circumstances and the reasoning of the court below, the court below determined that the instant claim is a corrected invention under Paragraph 2 of this case’s notice of submission of opinions by the judge, while the court below stated that the instant request for correction was a corrected invention under Paragraph 1 of this case’s notification of submission of opinions by the judge, on the other hand, the specific reasons for the recognition of non-conformity are that the composition of the first claim and the second claim to be used together with the announcement of non-conformity with the first claim 2 of this case is nothing more than the composition of the new content, and thus, the court below determined that the amendment of the first claim 2 of this case’s new content is not only a subordinate to the second claim, but also a different independent claim citing the second claim.

However, according to the records, the specification of the instant patent invention states that the purpose of adopting the initial contact is to exclude from the initial contact method of the instant patent invention and to adopt the initial contact method. On the other hand, the initial contact method is a combination method with the initial contact method without any heat, while the initial contact method is a combination method with the initial contact method. If, upon the instant request for correction, the “the initial contact method” of paragraph (1) of the instant patent invention is corrected to the “heat contact method” of the corrected invention under paragraph (1) of this case, the correction is an addition to the new one, which is excluded from the specification of the instant patent invention. Accordingly, upon examining the grounds stated in the correction notice, the instant request for correction cannot be accepted as being in violation of Articles 133-2 (4) and 136 (2) of the former Patent Act.

Therefore, although the court below's explanation on this part of its reasoning is inappropriate, it is legitimate to conclude that the correction of this case cannot be accepted, and there is no violation of law that affected the conclusion of the judgment.

2. Regarding ground of appeal No. 2

The court below is just in holding that the nonobviousness of the cited invention 1 as prior art that denies the inventive step of the Claim 1 invention in this case, and the Claim 1 invention in this case can be easily derived from combining the cited invention 1 and the Claim 1 invention in this case with the person with ordinary knowledge in the art, and its effect can be predicted from the Cited Invention 1, and thus, its inventive step is denied. There is no error in the misapprehension of legal principles as to the inventive step judgment, as otherwise alleged in the ground of appeal, and there is no error in the misapprehension of legal principles as to the Claim 2, 3, and 4 invention in this case and Claim 1 through Nos. 4 of this case.

3. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Min Il-young (Presiding Justice)